Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Wednesday, 31 March 2004

Thanks to Piter de Weerd for drawing the attention of the IPKat to an article in the Royal Gazette reporting that half of the 37,000 registered trademarks in Bermuda have been lost from the computerised Trademark Registry following a crash. Although there was a back-up copy available, this failed to work because of earlier configuration changes to the system. The missing marks are now being inputted to the computer system by hand from the hard-copy register. The process is expected to last up to two weeks, and in the meantime, new marks cannot be registered and searches for conflicting marks cannot be made. This is highly inconvenient for a jurisdiction which is trying to market itself as a leading e-business and IP centre.

The IPKat says that trade marks aren’t the first things to go missing in Bermuda. When something’s important, make a backup copy and when it’s really, really important, make two!

More things to go missing in Bermuda here Lost trade marks here and here

Tuesday, 30 March 2004

Issue 2 of the Sweet & Maxwell publication The European Copyright and Design Reports has now been released. It contains just two cases this time, but they're pretty interesting ones.

* Uitgeverij Byblos BV v J. K. Rowling and others [2004] ECDR 61: This is the decision of the Court of Appeal of Amsterdam to allow the continuation of the interim injunction ordered in favour of the Dutch publishers of of Harry Potter and the Philosopher's Stone, against the publishers of Tanja Grotter and the Magic Double Bass.
* Intercase UK Ltd and another v Time Computers Ltd [2004] ECDR 78: An action before Mr Justice Patten (UK, Chancery Division) in which he had to consider issues relating to the ownership and passage of title in the design right for an integrated computer desk.

There are still no decisions from OHIM on any aspects of the Community design, if the OHIM website is anything to go by.

EBL Direct reports that a court in Cologne, Germany, granted Hertz Germany an injunction against Claria (formerly known as Gator), ordering that company to stop feeding its pop-up ads for Hertz’s competitors on to Hertz’s website. The court found that this infuriating practice breached provisions of the German Unfair Competition Act (Gesetz gegen den unlauteren Wettbewerb, or UWG). Claria’s ads were automatically activated whenever a visitor to the Hertz website had previously – usually unknowingly – downloaded Claria’s advertising software. Hertz maintained that the ads interfered with its ability to do business with online customers.

The IPKat, who dislikes the invasion of his screen by alien pop-ups, is impressed with this result. He has learned that, although the UWG’s civil provisions are well-known in European IP circles, the less well known criminal infringement provisions of that law carry a fine of up to 250,000 euros and six months’ imprisonment.

Remove unwanted pop-ups? Try Crazy Browser (enthusiastically recommended by Jeremy)
Make your own pop-ups here and here Less objectionable pop-ups here and here Other things you can spend 250,000 euro on if you don’t plague websites with pop-ups here, here and here

The BBC reports that Disney has won its 13 year royalties battle against Stephen Slesinger Inc, which had claimed that it was owed millions of dollars in unpaid Winnie the Pooh royalties. It seems though the case was not decided on trade mark or contractual grounds. Instead, the judge decided against Stephen Slesinger Inc because it had stolen documents from Disney's premises. Said Judge Charles McCoy, “SSI's willingness to tamper with, and even corrupt, the litigation process constitutes a substantial threat to the integrity of the judicial process”. Slesinger had argued in its defence that Disney had known that it was rummaging around in its dustbins for years but had never objected. This did not impress the US judge. Nonetheless, Slesinger has said that it plans to appeal.

The IPKat says that it’s a shame that the trade mark issues weren’t resolved here, but illegally obtaining documents is a bad idea in any field of law and the court’s position ought to discourage the practice. In a related story, the BBC reports that a team from the Czech Republic has taken the title of Pooh-sticks champions at the 21st annual world championship Pooh-sticks race. The IPKat wonders if this is a case of the expropriation of English traditional knowledge?

Monday, 29 March 2004

At the monthly IP Chat, hosted by Ilanah and Jeremy at the Queen Mary Intellectual Property Research Institute, some interesting points cropped up concerning the ECJ decision in Case C-100/02Gerolsteiner Brunnen v Putsch (blogged by the IPKat on 8 January). In Gerolsteiner the ECJ held that the use of a term of geographical origin (KERRY SPRING) did not infringe the German GERRI trade mark for the same goods if it was "in accordance with honest practices", even if the use of that term (i) was a use as a trade mark and not as a mere descriptor and (ii) that use was likely to cause confusion.

The interesting point is this: the ECJ (at para.16 of its judgment) says that "Art.6 [of Council Directive 89/104, the provision which contains the "honest use" defence] seeks to reconcile the fundamental interests of trade mark protection with those of free movement of goods ... in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the [EU] Treaty seeks to establish and maintain". But how can this balancing act be done? If German consumers are going to be confused between two different products bearing similar trade marks, the earlier German mark is incapable of fulfilling its essential function of identifying the origin of its owner's goods.

There seems to be a pendulum effect at work. In HAG I the ECJ's decision had the result that free movement of goods overrode the trade mark's essential function. In HAG II the ECJ reversed its position and said that the essential function was entitled to protection even if it meant restricting that free movement of goods. Now in Gerolsteiner we have swung to the opposite extreme again.

The role played by honesty in the Art.6 defence is also open to question. Whether the importation into Germany and subsequent sale of KERRY SPRING is an "honest use" or not is a matter of no concern to the German consumer, who will be just as confused by similar marks where the use of the later mark is honest as where it is dishonest. It is easy to imagine a scenario in which an honest use of this nature will destroy the earlier mark in its entirety, where the honest invader is a well-resourced big brand competing with a small national brand.

The Gerolsteiner decision appears to be unobjectionable in itself. The main problem is in the manner in which the ECJ seeks to couch the justification of its decision.

The current issue of Sweet & Maxwell's Entertainment Law Review, just published (March 2004), contains Jeremy and Ilanah's article "To Be and To Have: Copyright Perspectives on Être et Avoir". Many thanks to those IPKat readers who commented on earlier drafts of it before it was accepted for publication. This issue contains lots more good material too, including the first instalment of Warren Shiel's mega-article on viral online copyright infringement in the US and UK and a highly readable case note on MGM v Grokster by Shannon Yavorsky and David Haubert.

Sunday, 28 March 2004

The BBC reports that Nichols plc is to re-introduce its long-established VIMTO fruit drink in India, after an absence of some 50 years. To do so, Nichols had first to re-register its historical brand, warding off imitation brands such as the WIMTO raspberry drink. Said Nichols plc’s chairman, John Nichols: “India is a good market - there are lots of people, a growing economy and an awareness of our product from many, many years ago". He is unperturbed by the spectre of VIMTO’s imperial association, pointing to the continued success of old-established pre-independence colonial brands such as OVALTINE.

Soft drinks are a matter personal taste: the IPKat notes that VIMTO is an anagram of “vomit”. More seriously, there is a strong element of nostalgia in consumer choices relating to soft drinks: the relaunch of childhood favourite brands can generate cult status.

Saturday, 27 March 2004

The April 2004 issue of Sweet & Maxwell's European Trade Mark Reports has now been published, a little ahead of time. This issue leads with the Danish Supreme Court decision in Paranova v Boehringer Ingelheim on the application of the doctrine of necessity to various forms of repackaging of parallel traded pharma products, including "one-to-one" repackaging and "window labels". Other important decisions reported include

• the OHIM Third Board of Appeal decision in Karl Fazer v USP Brands that Finland is not a substantial part of the European Community;

• two meaty WIPO Arbitrations, one on the legality of a parma-schinken.com website from which both PARMA ham and other products were sold, the other on whether the use of britishmeat.org is objectionable, given that the BRITISH MEAT trade mark was a figurative one, not a word mark;

• the Court of First Instance decision in Unilever v OHIM on the registrability of speckled tablets.

Next month the ETMR runs its special INTA issue, in which some of the juiciest trade mark cases are reported.

If you come across any interesting trade mark case that you'd like to see reported, wherever in Europe it comes from, please don't hesitate to contact the IPKat's masters, Jeremy and Ilanah (who are the Editor and Deputy Editor of the ETMR respectively) here.

Friday, 26 March 2004

You may have noticed the recent dramatic change in the appearance of the IPKat blog. Well, the IPKat is planning to pull a few more surprises. He will shortly be migrating to a new blogging medium which will enable him to post pictures and illustrations as well as text. His masters Jeremy and Ilanah do hope you’ll enjoy the new format and that, more importantly, you’ll be patient with them when the migration takes place.

A prize for sparkling wit goes to The Onion of 24 March, "Coke-Sponsored Rover Finds Evidence of Dasani on Mars" (for Dasani scroll back to the IPKat blog of 21 March). Comment by the IPKat would be superfluous. Read and enjoy.

The IPKat is excited to have received one of the best and brightest IP reads for some time, in the form of David Keeling's Intellectual Property Rights in EU Law Volume I - Free Movement and Competition Law, available from Oxford University Press. David, for the unitiated, is a member of the OHIM Boards of Appeal. Those who are familiar with him and who have heard him speak in public about subjects such as the Community trade mark and the effect of the trade mark decisions of the European Court of Justice will know that he is a man who both formulates his opinions with care and then shapes the opinions of others. A fierce critic of the absurd and the illogical, David is fortunately willing to share his thoughts with others: this book is one result of his willingness to do so.

This book's subject matter is the constructive tension between intellectual property rights, which protect wealth and encourage investment by creating monopolies, and competition law, which demands of competitors that they face each other in a contest which none of them can win. Like sandcastles, IP rights are the fruit of constructive labour that is levelled by the uncomprehending tide of competition law which levels them. David's writing leaves the reader with no doubt that the European Court of Justice is part of that uncomprehending tide: its grasp of competition principles is undoubtedly firmer than its understanding of the principles upon intellectual property law is believed to stand.

The chapter headings of this book, listed below, provide the author's chosen structure for analysing his subject. Dipping into each chapter, especially where he writes on the extensive and often confusing case law of the European Court of Justice, the reader will soon detect the combination of sharp perspective, detailed knowledge and deep understanding that reflects the 17 years during which David Keeling served as an official within that tribunal. The chapters are as follows:

1 The Scope of the Undertaking
2 The Free Movement of Goods and Services: an Overview of the Basic Principles
3 The Conflict between Intellectual Property Rights and the Principle of Free Movement
4 The Applicability of National Laws Governing the Creation of Intellectual Property Rights in the Absence of Harmonization
5 The Dichotomy between the Existence of the Right and its Exercise
6 The Specific Subject Matter of the Right
7 The Exhaustion of Rights
8 Trade Marks: the ECJ Case-law
9 Patents: the ECJ Case-law
10 Copyright: the ECJ Case-law
11 Competition Law

The text is written in a clear, crisp, almost conversational English which prefers short and pointed sentences to the long, rambling variety. This prose floats buoyantly above a sea of footnotes that provide not merely source material to support the author's points but also evidence of his genuine erudition and scholarly commitment.

The IPKat looks forward to the day Volume II sees the light, addressing the various harmonising Directives and pan-European rights Regulations that form the superstructure of IP activity in Europe. When that day comes, we will be able to enjoy and benefit from not merely David's comments but also from his commentaries.

Thursday, 25 March 2004

Ananova reports that the Scottish village of Lonmay, which says it's the ancestral home of Elvis Presley, has been told by Elvis Presley Enterprises Inc, Graceland, that it can't use the late singer's name because they object to any unauthorised use of their trade marks. Local Scottish Parliament member Stewart Stevenson has criticised Graceland's jackboot tactics: "They should be flattered to be linked to Scotland. I am sure whatever they try to do, we will see people coming from America and all over the world to see where the great man came from. This is a gross over-reaction and if Graceland have a look at the situation they will realise we are a little bit off taking over their mantle".

The IPKat wonders how Elvis manages to retain his popularity in the UK notwithstanding the heavy-handed policies of his Estate.

The BBC reports that the British Phonographic Industry (BPI) is to employ instant messages that will appear when internet users are downloading music illegally. The messages will warn users that their activities are illegal and will advise them that they will face court action if they do not disable their file-sharing software.

The IPKat hopes that the messaging system will be sophisticated enough to discern when downloads actually are illegal. If it cannot, it may have a chilling effect on the legitimate sharing of information.

The BBC reports that getting on for 300 independent recording labels are on the verge of withdrawing their products from MTV, in response to the European broadcaster's decision to slash royalty payments to them by a whopping 55%. The independents feel that MTV is getting top-quality content from them and should pay a price which is commensurate with their worth. MTV argues that the independents haven't taken due account of the massive benefit they derive from exposure on MTV and its sister channels VH1 and TMF.

The IPKat thinks this is just the sort of scenario in which blanket licensing, organised through a reputable collecting society, is so much more painless.

Wednesday, 24 March 2004

In an attempt to curry favour with his readers, the IPKat draws your attention to an article in today’s Daily Telegraph. The piece describes how chicken tikka masala served in many Indian restaurants across the UK sometimes contains dangerous amounts of colourings such as tartrazine and ponceau 4R. What’s the connection with IP you may ask. Well (no doubt much to OHIM’s chagrin – or should that be amusement?) the ruby coloured delicacy is commonly referred to by its acronym and is known as a CTM.

Spanish curry hereMake your own (dye-free) CTM hereCTM – the truth behind the chicken here and here Why CTM makes the world a better place here

The Register informs us that the RIAA is proceeding against another 532 music-swapping US students at 21 universities, including 89 John Does (for earlier RIAA action see IPKat blogs of 9 September and 19 October last). The IPKat guesses that, if things are tough for the music industry these days, they must be even tougher for students ...

The IPKat has just come across an interesting article in Marketing Week (18 March) by David Benady, "Divorce One, Sue One Free". Benady questions the wisdom of leading UK retailer TESCO providing legal services from its supermarkets alongside its usual range of food, drink, clothes and household equipment. Tesco Law can bring in big profits, but will the brand suffer if Tesco is perceived by consumers as "the company that won my ex-wife the car, the house and half of my private pension"? And what happens when two Tesco customers are in dispute?

The IPKat will be flying to New York next month, where the Fordham Annual Conference on International Intellectual Property Law and Policy takes place on 15 to 16 April. The cast of speakers for the Thursday and Friday sessions is most impressive and the IPKat's masters are delighted to be invited to participate in this leading event.

If you're attending the Fordham conference and want to meet the IPKat, click here to let us know.

Ananova reports that a Chilean artist, Pablo Ferrer, has opened an exhibition in which he recreates famous paintings with plastic toys. He uses toys from the GI Joe range - the US equivalent of the European Action Man - to recreate masterpieces by the likes of Rubens. He says his ‘Liliput to Brobdingnag’ exhibition, at the Gabriela Mistral Gallery, is intended to be humorous. Mr Ferrer told Las Ultimas Noticias: "I think that my work has something funny about it because it shows an ironic view on the history of art. Also it makes you think about the phoney side of the paintings".

The IPKat wonders whether the choice of Old Masters such as Rubens was dictated by a fear of copyright infringement if the works of modern artists were treated in the same manner. Having seen the illustrations on the Ananova site, he is quite unsure as to whether there is sufficient copying to support an infringement claim.

Tuesday, 23 March 2004

Fresh today on BAILII is Dendron GmbH and others v Regents of the University of California and Boston Scientific [2004] EWHC 589 (Pat), a Patents Court decision of Mr Justice Laddie.

Background

This case concerned UC's patent for special apparatus that could be used to deploy Guglielmi Detachable Coils accurately (GDCs are used to treat aneurysms). Dendron sought revocation of the patent. UC and Boston Scientific counterclaimed for infringement. Opposition proceedings were in progress before the European Patent Office (EPO) and there were other actions in the Netherlands and Germany. As if this WASN'T enough, Dendron applied to the District Court of the Northern District of California to obtain information which, it said, would assist in the English, Dutch, German and EPO proceedings. The District Court ordered the production of documents which had been disclosed by a company in infringement proceedings (the USC order).

The English proceedings

Dendron sought (i) confirmation that it could use material given pursuant to a request under Council Regulation 1206/2001 (which directed the examination and production of documents by an individual at the University of Freiberg in Germany) wherever it liked, including the EPO, Dutch and German proceedings; (ii) an equivalent application relating to testimony to be given in courts in Alabama; and (iii) permission for its Dutch and German lawyers to see the documents produced under the USC order.

UC and Boston argued disclosure under the USC order was subject to the express limitation that it was only to be used for the English proceedings and that there was no basis for allowing the German and Dutch lawyers to see the material.

The decision

Laddie J held that, on balance and taking all the circumstances into account, it would be just to allow the Freiberg material to be used in the German and Dutch proceedings. However, in respect of the USC order, he was not persuaded that there was sufficient justification to lift the restriction on collateral use. Nor was he persuaded that use of the Freiberg material would occasion injustice to the German and Dutch proceedings. However, permission to make such collateral use would be limited to the German and Dutch proceedings, since there were no special circumstances requiring the court to lift the restrictions on collateral use of documents in respect of the USC order.

The IPKat hopes that one day he'll grow up to understand how jurisdictions without disclosure rules ever manage to resolve their patent disputes.

It’s not often that planning or ramblers’ right issues are of direct interest to IP lawyers. However, articles on the BBC website and in the Times have both highlighted the interface between these areas. It is reported that the parents of Catherine Zeta-Jones are considering applying for judicial review after a telecommunications company was given retrospective planning permission to continue trading from a location adjacent to the parent’s Mumbles home. The Zeta-Joneses argue that the company poses a risk to their security and that of their famous daughter and family when they come to visit. They also maintain that their privacy will be invaded. However, the owner of the business has said that the Zeta-Joneses’ privacy is at greater risk from paparazzi intrusion and Swansea County Council has stated that if the parents were desirous of more privacy, they should have located their newly-built home in a more secluded area. Meanwhile, the Times reports that Madonna is to appear before a public inquiry in May concerning the rights of ramblers to roam through her country estate, Ashcombe House. Again, she is citing privacy concerns, and has already won the right to stop a footpath from being opened 100 yards from her house.

While the IPKat understands that people in the public eye may have special security concerns, he is uncomfortable with the thought of celebrities (or even vicarious celebrities such as the Zeta-Joneses) being able to close off bits of the countryside that would otherwise be accessible to other users. He’s also not sure about the legitimacy of the celebrities’ claims. Everyone has privacy concerns when there are other land-users in close proximity. Unless it is shown that the celebrities are being specially targeted because of their celebrity status, there is no reason why they should be entitles to special treatment.

Rambling hereFind out where you have the right to roam here How to stop rambling here How to stop mumbles here

Findlaw reports that US publishers Playboy Enterprises Inc. are due in court this morning to press criminal charges against the owner of Voici, a French women's weekly that printed miniatures of Playboy pages featuring the actresses Daryl Hannah and Shannen Doherty. Voici publisher Prisma Presse and chief executive Axel Ganz have been summoned to a preliminary hearing to face accusations of "counterfeiting by publication or reproduction", a court official said. Prisma's legal director, Berard Mirepoix, said Playboy had also filed for euro 400,000 in damages after Voici used the images in its press review.

What has Voici actually done? In its 6 October issue it ran page reproductions, measuring three inches by two, from a Playboy photo shoot with Hannah, 43, whose film credits range from 1980s sci-fi classic "Blade Runner" to "Kill Bill”. Entitled "Hannah from Heaven", the Playboy series shows the smiling actress in a variety of poses, sporting a pair of pink roller boots and very little else. The following month, when Playboy's American edition published photos of Shannen Doherty ("Charmed" and "Beverly Hills, 90210"), Voici once again carried scaled-down highlights. Prisma said they were baffled by Playboy's reaction to what they see as free publicity for the half century-old adult magazine.

"They felt we'd damaged their business and that because we'd shown their photos, people wouldn't buy their magazine afterward," Voici editor Hedi Dahmani is reported as saying, "but if I were a young man and I noticed in the press review that Daryl Hannah was appearing naked in Playboy this month, I'd want to go buy it". Prisma argues that using images from other publications in press reviews is common practice among newspapers and magazines ― including Playboy.

The IPKat is curious to know how this dispute will end. The French (and indeed the French courts) are not currently known for their love of Americans. On the other hand, they are just about the staunchest protectors of authors’ rights and copyright interests on the planet, which is why he tips Playboy, that undeserving exploiter of female flesh and male weakness for it, against the local publication.

A (relatively) recently decided case, that only last week came to my attention, has some important implications for the continuing development of the nascent concept of copyright misuse in the US. Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc.342 F.3d 191 [2003] concerns the application of this equitable defence by a company that began life compiling film trailers into videotape for home video retailers to display in their stores. Video Pipeline gained the right to distribute such trailers by entering into agreements with a variety of entertainment companies. In 1988 Video Pipeline entered into such an agreement with the Disney Corporation. After the completion of the agreement, Disney proceeded to provide Video Pipeline with a number of movie trailers.

Video Pipeline soon established an online presence, creating two websites, VideoPipeline.net and VideoDetective.com. A movie trailer database was made available on VideoPipline.net. With its websites, Video Pipeline was able to extend the scope of its business; the Internet clients of Video Pipeline were usually retail websites selling home videos or DVDs and they used VideoPipeline.net to display trailers to site visitors.

VideoPipeline had included on its online trailer database trailers it had received under licence from Disney. However, Disney considered such activity to be in breach of its licence. As a result of this interpretation, Disney requested that VideoPipeline remove the trailers from the website; VideoPipeline subsequently complied with this request. However, in 2000, Video Pipeline filed a complaint in the District Court of the District of New Jersey, seeking a declaration that the online use of the trailers did not violate federal copyright law. Disney shortly after terminated the licence agreement. Before this termination, Video Pipeline decided to replace some of the trailers it had removed at Disney’s request – in doing so, however, it simply copied a number of minutes’ worth of film from a number of Disney movies in order to create its own clip previews of the movies. Similarly to the licensed trailers, Video Pipeline stored the clip previews on its website database and amended their complaint in the District Court to seek a declaration allowing the use of the clip previews. Disney filed a counterclaim alleging copyright infringement. The District Court entered a preliminary injunction, later revised, that prohibited Video Pipeline from displaying Disney films on the Internet.

When appealing against this injunction, Video Pipeline claimed that Disney misused their copyright by placing conditions in their licence that prevented Disney trailers from being shown on websites that attempted any criticism of the Disney Corporation. The Disney licence agreement stated:

“Websites in which trailers are used may not be derogatory to or critical of the entertainment industry or of Disney (and its officers, directors, agents, employees, affiliates, divisions and subsidiaries) or of any motion picture produced or distributed by Disney…….or of the materials from which the trailers were taken or of any person involved with the production of the underlying works. Any breach of this paragraph will render the licence null and void and the licensee will be liable to all parties concerned for defamation and copyright infringement, as well as breach of contract.”

While the Court of Appeal affirmed the judgment of the District Court, two important points, were made in summary, have important implications for the doctrine of copyright misuse.

First the Court (3rd Circuit) explicitly recognised the existence of copyright misuse. This is important because the very existence of copyright misuse has long been a contentious issue, with some courts withholding judgment because the Supreme Court had not decided on its existence. Second, and to my mind more importantly, the copyright misuse defence was essentially distinguished from an historic reliance on antitrust. The Court stated:

“it is possible that a copyright holder could leverage its copyright to restrain the creative expression of another without engaging in anti-competitive behaviour or implicating the fair use and idea/expression doctrines”.

Previously, in many cases and much academic literature, it was suggested that a defence of copyright misuse could only be applied where the activity in question also contravened anti-trust law, i.e. if it was also anti-competitive. The distinction is important because the modern interface between technology and copyright has ensured that the mere misuse of a copyright grant (as opposed to the anti-competitive use of a copyright grant) has become more possible in practice. For example, the control of digital copyright works by technological systems that rely on conceptual legal protection can be seen as extending the grant of copyright. How? By the simple fact that the nature of the contract constructed by the system allows a greater specification of the grant of copyright, thus removing some of the equities that emerge from the complexity and fluidity of a non-digital, non-computational contractual scenario. Such “misuse” may not be anti-competitive, but it may be misuse nonetheless. Video Pipeline recognises that a copyright grant may be misused in such an anti-public policy fashion. Importantly, it suggests the removal of the previously burdensome requirement of the existence of anti-competitive behaviour in copyright misuse cases.

Of course, an important question, even if one accepts the distinction between anti-competitive behaviour and misuse, is how one arrives at a suitable definition of such public policy misuse for legal purposes. As such, even though Video Pipeline provides much of benefit for the continuing development of copyright misuse doctrine, it also ensures further controversy regarding this most interesting aspect of U.S. copyright law.

Sunday, 21 March 2004

Nzoom.com reports that New Zealand is considering an amendment to its copyright law that would allow those who buy CDs to make a single copy of the CD. However, the proposed news has been opposed by Universal, which maintains that no copying should be allowed.

The IPKat is remaining on the fence on this one for the time being. Whether he supports the proposed amendment depends on the purpose for which it is being suggested. While he’s in favour of allowing those who buy CDs to make back-up copies in case the originals get damaged or to play in their cars, he’s less happy about allowing purchasers to make copies for their friends so that they don’t have to buy the CDs.

The Register has announced that Coca-Cola’s much-publicised DASANI bottled water has just been pulled from the UK market. This product’s life in the UK has been a short but troubled one. First came the news that DASANI was no fancy product but mere tap-water from the middle-class bastion of Sidcup. Then came the further revelation that the DASANI website was promoting the new product with the slogan “Can’t live without spunk” ― a phrase that might be viewed more positively in the US than in the UK, where “spunk” is a slang term for semen. Finally it now appears Coke’s purified tapwater contained high levels of bromate, which is sometimes linked to increased cancer risk (for details click here and here). Bromate is not to be confused with the bromide derivative which is added to water products in the UK to fulfil local legal health requirements.

The IPKat is surprised at the apparent ineptitude of Coca-Cola, the owners of the world’s largest and most successful brand, in getting the DASANI message across to the British market. No doubt the damage done to the image of this one is only temporary, since there’s no damage to a brand in the UK that can’t be cured by time and money. In the meantime this cat will be keeping strictly to his saucer of milk.

Saturday, 20 March 2004

Last November one half of the IPKat, Jeremy Phillips, gave a paper at the PATINNOVA '03 Conference in Luxembourg. The topic was intellectual property dispute resolution in the "new" Europe, i.e. the enlarged European Union which will be in existence from 1 May. His paper contrasted the pros and cons of litigation, arbitration and mediation and concluded that, ultimately, dispute resolution is a potentially expensive business decision and should be judged by the same criteria as any other business spend. A revised version of this paper has now been published in the March edition of Managing Intellectual Property under the title "How to Enforce Rights in Europe". Jeremy writes: "If you read this article and have any comments, however critical, please let me know".

Friday, 19 March 2004

The UK Trade Mark Registry issued yesterday (Thursday 18 March) a new Practice Amendment Notice, PAN 5/04, on "Names of Famous People (Living and Deceased) and Groups". The IPKat will return to blog this PAN in detail once he's had the time to read it properly. In the meantime, he will give away one of its little secrets: it addresses once again somewhat British obsession with the extent to which trade marks are registrable for badges of allegiance.

The IPKat’s latest guest blogger is Massimo Sterpi. Massimo, a partner in the Turin-based IP practice of Jacobacci e Associati, is a member of the editorial board of the European Copyright and Design Reports; he is also an active member of the MARQUES council. Massimo writes:

“Over the years, trade marks have evolved from distinctive signs applied on products to highlight their origin, to brands (i.e. to signs symbolising also the goodwill attached to the trade mark) and, eventually, to “avatars”, i.e. to kind of fictional characters which impersonate the lifestyle, set of values and emotions embedded in the trade mark.

In other words, trade marks have matured from distinctive signs ancillary to a product (trade marks), to economic entities valuable per se (brands), to proper “social personae”, having their own identity and character (avatars).

In a sense, it is no longer the trade mark that distinguishes the product, but it is the product which impersonates the brand/avatar. As one commentator said talking about the Lacoste crocodile logo: “the crocodile has eaten the T-shirt”.

Such a revolution cannot be ignored when trying to protect the new brands/avatars.

Whereas a traditional trade mark, i.e. a sign intended to distinguish a product of a business from identical or similar products of other businesses, should be protected only against strict risk of confusion or association, brands – and especially famous brands – have to be protected also against dilution, i.e. uses of identical/similar signs for dissimilar goods that are likely to take undue advantage of or cause prejudice to the reputation of the brand.

Now, if we consider that the latest trade marks have become “avatars” – i.e. social personae impersonating the lifestyle, set of values and emotions embedded in the trade mark – their protection cannot be any longer restricted to avoid risk of confusion/association or to prevent dilution, but it must become a kind of identity protection. In other words, to properly protect the avatar’s identity, it will no more be sufficient to protect it against other identical or similar signs used commercially for similar or dissimilar products. In fact, the identity of the avatar – as the one of a physical person – may be tarnished also by non-commercial uses of same (satire, public criticism, use in undesirable contexts).

The best evidence that trade marks are now considered as powerful social players (and therefore, as avatars) is the kind of criticism they received in the last years. Books such as No Logo by Naomi Klein have strongly criticised the “new” trade marks as they become mere representation of lifestyle (Nike, Gap), loosing their original function of identification of origin and, rather, permitting the true origin of the product (whose fabrication is often delocalised in the third world) to be hidden. “Sucks” sites are often devoted not that much to the quality of the products under the criticised trade mark, but rather to the trade mark owner corporate policies or to the lifestyle they symbolise.

Currently, owners of the new brands/avatars have to study how to protect the “identity” of their trade marks. Old means such as watch services on new trade mark filings and patrolling of the markets is no longer enough to protect this identity.

Patrolling must be now extended to the press, product placements in films, use of brands in artworks, boycotts, and symbolic attacks.

Proper legal remedies – other than trade mark infringement actions – and public relation strategies are to be devised to protect the brand identity and reputation.

It is now clear that damages to the brands do not come only from counterfeiting and strict (commercial) infringement, but also from any form of libel or bad public relation deriving from consumers’ boycott, sabotage, satire, public criticism.

Now more than ever, trade marks rights (including the new “identity” right) may however conflict with other fundamental rights such as the right of free speech or the artistic freedom of expression. A proper balance between these rights has to be found on a case by case basis”.

Always keen to boost his vocabulary, the IPKat delights in learning new words. Imagine his delight, therefore, at finding the word “Volvoid” on the US Word Spy website. So what is a Volvoid? He is a white, moderately affluent, suburban professional who is politically liberal. The word seems to be a sort of metonymy, “Volvo” being a symbol of white, liberal, affluent Sweden. The Word Spy adds a caveat: “There's a different adjectival sense of this word that means ‘of or relating to Volvos or Volvo drivers’ or, as a noun, ‘a Volvo driver’. This sense dates to about 1988”. In the light of this, the IPKat wonders what sort of Americans purchase Volvo cars these days, what message the Volvo brand name sends them and what their self-image is.

The subscription-only All England Direct service has just thrown up another UK trade mark case, Mukadam v Indobrit Magazine Ltd and another (Chancery Division, 17 March, before Deputy Judge Peter Leaver QC). Mukadam owned two registered trade marks, the first being a word mark, INDOBRIT, the second consisting of the word INDOBRIT and a star: both were registered for printed matter. The defendants published a magazine under the name Indobrit. He sued the publishers of the Indobrit magazine for trade mark infringement and won.

The result is no surprise. What interests the IPKat is the fact that the word “Indobrit” got registered at all. It seems as descriptive a term as “Anglo-Saxon” or “Afro-American” and its meaning is so plainly guessable that it seems strange that anyone should be able to obtain a monopoly of its use in the cultural media. Even more surprising is the fact that, if his Google search is anything to go by, the word “Indobrit” only seems to be used by or in relation to the defendant’s magazine.

The IPKat is pleased to see some more trade mark cases trickling through the courts. One of the new batch is IBM v Web-Sphere Ltd. IBM registered WebSphere as a CTM for computer software and communications services. Meanwhile, the defendant, a provider of services connected with the internet, changed its name from the name under which it had been incorporated to Web-Sphere. IBM got wind of this and requested that the defendant change its name. The defendant refused and distributed leaflets stating that IBM had made threats towards it
and acted in restraint of trade. It also claimed that the name was not lawfully trade marked by IBM. IBM launched infringement and malicious falsehood proceedings.

The identity of very strong similarity of the two signs, together with the identity of the goods on which they were used meant that infringement was found. Web-Sphere’s attempts to rely on the own-name defence failed because the name-change had only taken place after the IBM had launched its WebSphere product. Thus, there was a strong inference that the defendant’s company name had been chosen to take advantage of IBM’s reputation and goodwill. However, the malicious falsehood claim failed. While the statements made by the defendant in its leaflets were untrue and malicious, it wasn’t possible to establish that any damage had been caused to IBM because the defendant’s leaflets only had a very limited circulation and was amateurish compared to the reach and quality of IBM’s advertising.

The IPKat applauds another sensible decision. It would be ludicrous if a defendant could take advantage of the own name defence by changing its company name to suit the trade mark it wants to imitate after finding out that the claimant’s mark has been registered.

Thursday, 18 March 2004

The IPKat draws your attention to a recent decision of the UK Trade Mark Registry on the registrability of football club names for merchandising purposes. West Ham applied to register a series of seven trade marks including the element WEST HAM as trade marks for a wide number of goods. The O’Conells opposed the application, arguing that the marks were geographically descriptive under s.3(1)(c) of the Trade Marks Act 1994, they were devoid of distinctive character under s.3(1)(b) because they acted as badges of allegiance and because West Ham had no intention to use those marks as trade marks. The O’Connells claimed that the seven marks also could not be registered as a series under s.41(2).

The hearing officer allowed the opposition in part:
 The geographical origin objection applied only to the WEST HAM mark in solus because s.3(1)(c) only covers marks which consist exclusively of signs or indications that may serve to designate geographical origin. This was not true of the other marks in the series.
 WEST HAM was not geographically descriptive under s.3(1)(c) for most of the goods and services applied for. In its Windsurfing Chiemsee test, the ECJ had not intended to suggest that the fact that it was possible to produce or trade in goods from a particular location should be sufficient reason for a mark to be barred from registration as geographically descriptive. Instead, there must be a reasonably foreseeable likelihood that such circumstances will arise. Here the list of goods was extensive and there was no basis for the objection in relation to the vast majority of items. The only exception was that WEST HAM was a natural and apt term to use in relation to local newspapers and therefore the objection was valid in so far as it applied to the application for “newspapers” and “printed matter”. WEST HAM was also descriptive of “books”, “photographs”, “prints” and “pictures”, which could be about or of the area concerned.
 Contrary to the O’Connells’ argument, there was no separate ground of objection available under s.3(1)(b) based on the mark’s significance as a geographical location.
 The fact that the mark could serve as a badge of allegiance did not in and of itself mean that it was lacking in distinctive character. However, the badge of allegiance argument did mean that the marks were not distinctive in respect of the signs that referred to the football club rather than the area when they were used on items about or relating to the club itself e.g. calendars, magazines and stickers. Where the marks were used on such items they would do no more than describe the content or subject matter of those goods.
 The O’Connells’ argument under s.3(6) that West Ham was applying for the marks in bad faith was rejected. There was no evidence that West Ham did not intend to use the marks for the whole range of goods for which it applied. Football clubs do produce a wide range of merchandise and West Ham had made the relevant application in its application that it had a bona fide intention to use the mark. The argument that West Ham only intended to use the marks with other distinctive elements, and therefore had no intention to make trade mark use of the marks applied for was an attempt to re-run the badge of allegiance claim that could not be accepted. In any event, there was no evidence that WEST HAM would not use the mark on its own.
 The O’Connells were partially correct that the set of marks were not a series under s.41(2). WEST HAM was not would be perceived as a geographical area, whereas the other marks would be perceived as the name of a football club. Therefore the identity of the trade mark had been affected. However, all of the other six marks could constitute a series since all would be understood and denoting the football club, even those which did not include the element “FC” of “football club”.

The IPKat is surprised to see the “badge of allegiance” approach popping up in the new area of absolute grounds for the refusal of registration. He thought that the concept had died a death after Laddie J’s unsuccessful use of the term in his reference to the ECJ in Arsenal v Reed.

Wednesday, 17 March 2004

Today the IPKat went to hear Dr Irina Savelieva (White and Savelieva LLP; Deputy Chairman of the Moscow City Bar Association) speak on “Winds of Change: 'Perestroika' of the Russian Copyright System”. Dr Salelieva began with an account of copyright in Russia both before and during the 70 years of Communism. During that period, copyright was viewed initially in terms of social utility; the works of authors such as Checkhov and Turgenev and of composers such as Tchaikowsky and Rimsky-Korsakov were emancipated from copyright protection and turned over for the free use of all. Eventually the Communist state relented and reintroduced, motivated both by the need to enable State-funded publishers to exploit works profitably and by the desire to reward politically acceptable creators.

Dr Salelieva traced the further development of copyright in Russia from accession to the Universal Copyright Convention in 1973, through the clandestine and copyright-free samizdat movement to the heady days of entrepreneurial 21st century Moscow. She explained how institutions such as neighbouring rights and collective rights management, which most Western countries took for granted, are alien to Russian legal traditions .She also reviewed the development of inalienable, unwaivable and perpetual moral rights, together with both the practical and the theoretical difficulties which resulted from the enforcement of such rights. After discussing the socio-political and economic impact of piracy upon the Russian economy and social fabric, Dr Salelieva reviewed the vagaries of World Trade Organization admission policy: while countries such as Armenia had legal systems that were certainly less transparent than that of Russia and were at least as far from TRIPs compliance, those countries had been admitted to the WTO while Russia had not. In Russia’s case there was still no official prospect of an IP owner obtaining ex parte judicial relief; nor could the Customs authorities act ex officio. However, these deficiencies were being addressed either by proposed legislation or by action taken on the part of some of the judges, so presumably TRIPs accession and WTO admission are within Russia’s grasp.

The IPKat was delighted to learn that copyright is such a live issue in Russia today, where some 60% of income generated by copyright exploitation is earned by Russian rights owners.

This, the third edition of Margarete Singer and Dieter Stauder’s The European Patent Convention: a Commentary, was published in two volumes last year. Volume 1 (£130) provides an analytical and well-sourced account of the Convention from the Preamble to Article 89 (together with the relevant Implementing Regulations, Protocols and Rules), while Volume 2 (£135) continues in the same vein from Article 90 through to Article 178. Although its editors dismissively describe it as a “short commentary” which is “above all a commentary for practitioners”, it is neither short, weighing in at over 1,600 pages, nor is it exclusively practice-oriented, since it is enriched by insights which go well beyond the niceties of practice, extending to the very principles of patent protection.

The task of preparing a work of this nature is a daunting one, since it is not merely a monumental legal work but a massive translation, this third edition being the English version of the German second edition. Although that edition appeared as long ago as 2000, the English translation has been updated and includes discussion of EPC 2000.

The IPKat particularly recommends the coverage of Articles 52 to 57 on patentability and patentable subject-matter. This is the real core of patent law and a vast corpus of text has been allowed to grow around these provisions. Singer and Stauder’s book succeeds in explaining the import of these Articles by concentrating firmly on the essentials, summarising the main principles of patentability without sacrificing detail in the form of reference to the relevant Board and Court decisions where helpful.

Tuesday, 16 March 2004

Last Thursday Advocate General Francis Jacobs gave his Opinion in Case C-329/02 P, where Sat.1 SatellitenFernsehen GmbH appealed against the Court of First Instance's refusal to allow the registration of the word mark SAT.2 for a wide variety of services, including satellite broadcasting. The CFI ruled that SAT.2 was lacking in distinctive character (Regulation 40/94, Art.7(1)(b)) in relation to the satellite broadcasting. In doing so, the CFI stated that the basis of Art.7(1)(b) was the need to keep non-distinctive signs free for general use; as to Art.7(1)(c), the CFI adopted a vicious "salami-slicing" approach to registrability, ruling that since "Sat", "." and "2" each lacked distinctiveness in themselves, SAT.2 must be equally lacking in distinctive character. The Advocate General has recommended that the ECJ allow the appeal: the fact that a sign, or part of a sign, is not sufficiently distinctive to serve as a trade mark is not in itself a reason why it should be kept free for others to use. The ECJ's earlier ruling on colour marks in Libertel did not say that Art.7(1)(b) required that such marks should kept free for general use, but rather that businesses should not be unduly restricted in terms of the availability of colours. The AG also disapproved of the salami-slicing operation: marks must be considered as a whole, not in molecular quantities.

The IPKat is very happy with this Opinion, which he hopes the ECJ will adopt. He would however remind the applicant that, even if the mark is registered, the degree of protection which this largely descriptive mark is likely to confer will be very narrow.

Glaxo sold certain pharma products bearing its registered trade marks to various parties at low prices, on the understanding that they were for use in Africa. The goods were diverted to a Swiss company which sold them on to Dowelhurst, who in turn imported 16 consignments of the drugs into the UK and sold them to hospitals. Glaxo sued for summary judgment in respect of trade mark infringement, seeking an injunction to stop further importation. Glaxo’s argument was that each importation and subsequent sale was an obvious infringement, since it was clear that none of the original batches of drugs had been destined for the European Economic Area (EEA). Dowelhurst argued that the drugs as bought had been in the claimant’s standard French packaging and included the appropriate European Medicines Evaluation Agency number, indicating approval for sale within the EEA. Dowelhurst said that, since there was nothing to advise traders that the drugs were meant for Africa or weren’t to be sold in the EEA, Glaxo’s trade mark rights were exhausted. Peter Prescott QC held there was real prospect of successfully defending the claim in relation to 15 out of the 16 batches, but found that there was no prospect of a successful defence regarding the remaining batch. He therefore ordered Dowelhurst to stop infringing and awarded an account of profits against the in respect of the single batch. He also granted an injunction against Dowelhurst’s boss, whom he found responsible in law for the infringement. Glaxo appealed against the refusal of summary judgment in respect of the 15 batches and the decision to qualify the injunction, while the defendants cross-appealed.

The Court of Appeal dismissed Glaxo’s appeal but allowed the cross-appeals, saying that the case was unsuitable for summary judgment and should go to a full trial on all 16 consignments. While documentary evidence suggested that an ultimate destination in Africa was identified in respect of the consignments concerned, that didn’t mean that their buyer actually had to take the goods to their ultimate destination. Since not all the details of Glaxo’s contracts of sale were known, it could still be shown that Glaxo knew and consented to some of the goods going on the EEA market. Only a full trial could make these things clear. The Court of Appeal explained that normally, when you buy goods, you can resell them. A sale conveys the right of onward disposal to the buyer: a buyer who buys goods in the EEA with one intention (i.e. to export to Africa) might change his mind and resell within the EEA, since they are his goods. Sellers can change their minds too. In the circumstances, it was plain that Glaxo was a long way from showing that there was no real prospect of a successful defence in respect of each of the consignments. On the present information, it could not be said that Dowelhurst knew, or should have known, that the goods were intended for Africa and that was not the sort of point that could be resolved on a summary application. Accordingly there was enough of an arguable defence for the action to go to trial, even for the sixteenth consignment.

The IPKat notes that it’s getting a lot harder for IP owners to get summary judgment these days. This decision follows in the footsteps of the decision of the Vice-Chancellor Sir Andrew Morritt in Beiersdorf v Ramlort (blogged by the IPKat on 16 January). This downside is counterbalanced by the fact that it’s become easier to get interim injunctions. So, claimants, ask yourselves: do you really need summary judgment, or will interim relief suffice?

On Friday Laddie J reached an Earth-shattering conclusion: “presentation of information” in s.1(2)(d) of the Patents Act 1977 encompasses providing information. The context was an appeal by a would-be patentee against a decision of the Deputy Director of the Patent Office to refuse an application for a patent for advent calendars. The claim was for a calendar that, as well as having the date on each of the doors, would have an “additional indicium” i.e. some extra information on it stating who was meant to open each of the doors to prevent disputes arising over who would get the chocolate in shared advent calendars. The patentee had argued that while “presentation of information” could mean either the “expression of information” (requiring information to be provided in a particular formation e.g. Times Roman font i.e. how information is provided) or the “provision of information” (the act of communicating information), in the context of the Patents Act, it referred only to the expression of information. According to Laddie J though, the patentee’s argument was contrary to the natural and primary meaning of the words of the act which were unambiguous and clearly encompassed conveying and presenting information. The lack of ambiguity mean that there was no need for any resort to materials such as the French and German versions of the European Patent Convention.

Monday, 15 March 2004

According to the Sunday Telegraph Former Manchester United and current Real Madrid idol David Beckham is threatening legal action against a Russian firm that he claims is using his image without permission to sell alcopops. His threat follows the appearance in Moscow and St Petersburg of hoardings and magazine advertisements that use a model closely resembling Beckham to sell cans of "Manchester Gin", a mix of gin and tonic. On one half of his body, the model is wearing a Manchester United kit, while on the other he is dressed as an English gentleman. Beckham's management agency believes the advertisements are a passing off of Beckham's image without authorisation. The ad campaign has proved immensely successful. Manchester Gin has seized about 10% of the growing market for ready-mixed drinks in Moscow and St Petersburg, with more than 18,000 cans being sold since it went on sale in December at a price of 30 roubles, equivalent to 50p. Happyland Drinks, which produces Manchester Gin, openly admits that the model in the poster is intended to look like Beckham, but denies any wrongdoing.

Any infringement of image rights in Russia could damage both Beckham and Manchester United. A core element of the England captain's transfer to Real Madrid last summer was the marketing value of the player's image rights. At Manchester United, Beckham's £70,000-a-week wages were supplemented by a weekly payment of £20,000 for image rights used in club merchandising. He earned a further £10 million from personal endorsements and sponsorship deals with such commercial giants as Adidas, Pepsi, Police sunglasses, Vodafone and Marks & Spencer. On his move to Real Madrid, Beckham kept his existing personal endorsement contracts, and now receives 50% of any revenue generated from his image rights - estimated to bring him up to £750,000 a year.

The IPKat is still waiting for someone to slip up and wrongfully use his image in an ad campaign: it’s the only way he’s ever going to get rich.

The Jewish Chronicle (sorry – no link available) reports that Football Data (the commercial agents of the FA Premiership and Nationwide League) and the Scottish Premier League and Scottish League have submitted a claim in the Tel Aviv District Court against the Israel Council for Gaming in Sport (Toto). Football Data is claiming that Toto is infringing its copyright in British football fixture lists by including British matches in its pools listings. The practice has been going on since 1967. Toto insists that it is not infringing but refuses to disclose its defence until it is in court.

The IPKat draws his readers’ attention to the fact that a case concerning football fixtures is coming up for hearing before the ECJ on 30 March.

Sunday, 14 March 2004

According to the BBC a French author has lost his trade mark claim against Disney. Franck le Calvez, author of Pierrot The Clown Fish had said that the title character of Disney’s Finding Nemo, a clownfish called Nemo, resembled the title character in his story and sought to rely on his 1995 registration with the French trade mark office. However, Judge Louis-Marie Raingeard de la Bletiere found that though both fishy protagonists had big smiles and three stripes down their sides, people were unlikely to confuse them. Nevertheles, Le Calvez is planning to bring a copyright action against Disney and Pixar.

The IPKat suspects that the copyright claim is where all the real action will be. The French extend a very broad measure of protection to authors and artists under their droit d'auteur (copyright) laws. Additionally, the degree of similarity which is needed to support an action for copyright infringement is q good deal less than that needed to succeed in an action for trade mark infringement.

Friday, 12 March 2004

Yesterday the European Court of Justice gave judgment in a rare and unusual case involving one of Europe's least known species of IP right, the lesseer spotted Plant Varieties Right. In Case 182/01 Saatgut-Treuhandverwaltungsgesellschaft mbH v Werner Jäger, the court ruled that the holder of a Community plant variety right cannot require a farmer to provide certain information where there is no indication that the farmer has used or will use, for propagating purposes in the field, on his own holding, the product of the harvest obtained by planting, on his own holding, propagating material of a variety other than a hybrid or synthetic variety which is covered by that right and which belongs to one of the agricultural plant species listed in Article 14(2) of Regulation No 2100/94.

The IPKat, a carnivore, has hitherto taken little interest in this branch of IP law. Nonetheless, he's sure that it is a growth area.

The BBC reports that the Hong Kong actor Chow Yun-fat, star of Crouching Tiger, Hidden Dragon is suing the Chinese telecom company, the Konka Group, for $720,000 in an advertising dispute. The actor contracted to appear in the group’s adverts for one year in 1999. However, the group continued to use the actor’s image after the end of this term. In particular, Chow Yun-fat contends that his image was used in a Chinese airport in 2002. Konka Group has countered that the airport is a restricted area which it is unable to enter to remove the poster.

The IPKat says that this is more than a mere breach of contract claim. Underlying it is the assumption that Chow Yun-fat has rights in his personality which he can make the subject of a contract and that he can use those rights once again once the contract ends.

Thursday, 11 March 2004

Today’s Legal Week magazine reports that Lovells is suing Manuel Rayo, a Spanish lawyer who registered the name ‘Lovell’ in Spain. Lovells filed its claim in Madrid on 27 February, to assert its prior rights to the name. Rayo, who purports to operate a Spanish law firm called Lovell Abogados, is allegedly seeking compensation from Lovells, complaining that the names are too similar.

The UK firm, which says it has used the name since 1899, accuses the Spanish lawyer of acting in bad faith. There is no lawyer called Lovell at Lovell Abogados. Lovells’ name has been registered as a Community trade mark in all European Union member states since 2000 (not 1999, as the article claims), while Rayo filed the name Lovell in Spain in the same year. Lovells has operated under the Lovells name in Spain since it merged with German’s Boesebeck Droste in 2000, when it acquired that firm’s Alicante office.

The IPKat observes that neither Manuel Rayo nor Lovell Abogados appear to have any presence on the internet. If any reader knows how he or his firm can be contacted, the IPKat would dearly like to find out so that he can ask him some searching questions about his choice of trade name. Is it perhaps because Lovells is a good name and Manuel Rayo is a bad one?

The BBC reports that the US Patent and Trademark Office has annulled Patent 5,838,906, which protects the execution of remote code embedded in hypertext pages, granted in 1998 to Eolas Techonology. The patent, which relates to the interoperability of Internet Explorer with media players, is particularly significant because it lies at the heart of the infringement action brought by Eolas against Microsoft. Last year, an Illinois court awarded Eolas $521million in infringement against Microsoft and as a result, Microsoft started to make changes to its Internet Explorer program. Now it appears that the changes may not be necessary after all, though Eolas still has 60 days to appeal the USPTO’s decision.

The IPKat says that damages paid for infringing a patent that has subsequently turned out to be invalid has been a thorny issue in the UK – see Coflexip v Stolt, blogged by the IPKat on 1 March 2004.

Wednesday, 10 March 2004

Ther IPKat has already given space to the scrap between legendary track star David Bedford and The Number Company over the use of two unlicensed Bedford lookalikes in The Number Company's adverts for its 118 118 telephone directory enquiries (DQ) service (see previous blog of 18 January). Now the Register reports that Bedford has got the better of his foes by turning out to endorse the DQ service of The Number Company's rival BT. Bedford's passing off action against The Number Company is expected to be heard this year.

The IPKat thinks Bedford's stunt in endorsing BT's DQ service was pretty cool, but pauses to ponder. The Number Company might argue that it was only because they so extensively used Bedford's image, thus earning both itself and Bedford a good deal of publicity, that gave a faded name from the past a fresh lease of commercial life. If this can be shown, what would be the true measure compensatory passing off damages that Bedford could claim?

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